Ex Parte Chitwood et al

Patent Trial and Appeal Board

Feb 16, 2016

12836965 (P.T.A.B. Feb. 16, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
12/836,965 07/15/2010
3000 7590 02/18/2016
CAESAR RIVISE, PC
7 Penn Center, 12th Floor
1635 Market Street
Philadelphia, PA 19103-2212
FIRST NAMED INVENTOR
Randall Richard Chitwood
UNITED STATES DEPARTMENT OF COMMERCE
United States Patent and Trademark Office
Address: COMMISSIONER FOR PATENTS
P.O. Box 1450
Alexandria, Virginia 22313-1450
www .uspto.gov
ATTORNEY DOCKET NO. CONFIRMATION NO.
Ml285/20006 3293
EXAMINER
POTHEN, FEBA
ART UNIT PAPER NUMBER
2868
NOTIFICATION DATE DELIVERY MODE
02/18/2016 ELECTRONIC
Please find below and/or attached an Office communication concerning this application or proceeding.
The time period for reply, if any, is set in the attached communication.
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
following e-mail address( es):
patents@crbcp.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte RANDALL RICHARD CHITWOOD,
CHRISTINE BORGFELD, and DAVID DOBSKY
Appeal2014-002316
Application 12/836,965
Technology Center 2800
Before CHUNG K. PAK, GEORGE C. BEST, and
N. WHITNEY WILSON, Administrative Patent Judges.
BEST, Administrative Patent Judge.
DECISION ON APPEAL
The Examiner finally rejected claims 1-21 of Application 12/836,965
under 35 U.S.C. § 103(a) as obvious. Final Act. (February 11, 2013). The
Examiner also rejected claims 16 and 17 under 35 U.S.C. § 112, ,-i 2 as
indefinite. Id. Appellants 1 seek reversal of the obviousness rejections of
claims 1-16 and 18-21 pursuant to 35 U.S.C. § 134(a). We have
jurisdiction under 35 U.S.C. § 6(b).
For the reasons set forth below, we AFFIRM-IN-PART.
1 Metrix Instrument Co., LP, is identified as the real party in interest. Br. 1.
Appeal2014-002316
Application 12/836,965
BACKGROUND
The '965 Application describes proximity transducer systems.
Spec. 2. In particular, the Specification describes a non-contact transducer-
based proximity system that includes a proximity electronics module, in
monitoring system, and a two-wire current interface coupling the proximity
electronics module to the monitoring system. Id.
Claim 1 is representative of the '965 Application's claims and is
reproduced below from the Claims Appendix to Appellants' Brief with
limitations that are especially relevant to this appeal italicized:
1. A two-wire current interface for use in a proximity
transducer system comprising
a proximity probe,
a proximity electronics module coupled to the probe, and
a monitoring system for measurement of position and vibration
of a component to be monitored by determining the length of
the gap between the probe and the component to be monitored,
the tl'VO vvire-citrrent interface comprising a pair of vvires
providing power from the monitoring system to the proximity
electronics module,
the proximity electronics module being coupled to the
monitoring system by said two-wire current interface for
providing a non-processed electrical signal to the
monitoring system,
said non-processed electrical signal being
representative of the instantaneous value of the
length of the gap.
Br. 13 (emphasis, paragraphing, and indentation added).
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Application 12/836,965
REJECTIONS
On appeal, the Examiner maintains the following rejections:
1. Claims 16 and 17 are rejected under 35 U.S.C. § 112, iJ 2 as
indefinite. Final Act. 2.
2. Claims 1, 4, 7, 10, and 19 are rejected under 35 U.S.C. § 103(a) as
unpatentable over the combination of Dobsky2 and Blossfeld. 3
Final Act. 3.
3. Claims 2, 3, 5, 6, 8, 9, 11 - 18, 20, and 21 are rejected under
35 U.S.C. § 103(a) as unpatentable over the combination of
Dobsky, Blossfeld, and Miyazawa.4 Final Act. 6.
DISCUSSION
We begin with a short review of relevant portions of the '965
Application's procedural history. On February 11, 2013, the Examiner
finally rejected claims 1 - 21 of the '965 Application. In response to the
Final Action, Appellants attempted to amend claims 3, 9, 16, and 18 and to
cancel claim 17. See Amendment After Final ("AAF") 6 (April 19, 2013).
The Prosecution History of the '965 Application does not contain any record
of the Examiner's response to Appellants' attempted amendment. On May
9, 2013, Applicants filed their Brief.
An application's claims may only be amended after a final rejection
under limited circumstances. See 37 C.F.R. § l. l 16(b) (2013). Thus, an
examiner must authorize entry of such amendments. Id. In this case, the
2 US 2008/0054891 Al, published March 6, 2008.
3 US 6,437,581 Bl, issued August 20, 2002.
4 JP 7152989, published June 16, 1995.
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Application 12/836,965
records available to us do not indicate that the Examiner authorized entry of
these amendments or cancellation of claim 1 7. We, therefore, shall address
the issues raised in this appeal as they apply to the claims before the
Examiner at the time the Final Action was mailed, i.e. February 11, 2013.
Rejection 1. The Examiner rejected claims 16 and 17 as indefinite.
Final Act. 2.
Appellants attempted to overcome this rejection by amending claim
16 and canceling claim 17. See AAF 6. Appellants explained their reason
for seeking to amend claims 3, 9, 16, and 18 and to cancel claim 17 as
follows: "Applicants have addressed the 35 U.S.C. §[ ]112 (pre-AIA) second
paragraph rejection ... by amending Claims 3, 9, 16[,] and 18 and by
canceling Claim 17." Id. Appellants apparently assumed that their proposed
amendments were entered, because they do not address the rejection of
claims 16 and 1 7 in their Brief.
As discussed above, the record does not indicate that Appellants'
proposed amendments were entered. We, therefore, proceed as though the
proposed amendments were not entered. Furthermore, the Examiner's
Answer states that every ground of rejection, including the rejection of
claims 16 and 17 as indefinite, set forth in the Final Action dated February
11, 2013 is maintained unless listed under the subheading "WITHDRAWN
REJECTIONS." Ans. 3. However, the Answer does not list the rejection of
claims 16 and 17 as indefinite under the subheading "WITHDRAWN
REJECTIONS." See generally Answer. In other words, the Answer does
not state that the indefiniteness rejection has been withdrawn.
In view of the foregoing, we conclude that claim 16 has not been
amended and claim 17 has not been canceled since entry of the Final Action.
Because Appellants have not otherwise addressed the rejection of these
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Application 12/836,965
claims pursuant to § 112, ii 2, we summarily affirm that rejection. Appellants
can re-address these claims if further prosecution occurs.
Rejections 2 and 3. For purposes of their appeal of the rejections
pursuant to§ 103(a), Appellants stipulate that all of the '965 Application's
claims stand or fall together. Br. 5. We, therefore, address rejections 2 and
3 together.
The Examiner found that Dobsky discloses a proximity probe, a
proximity electronics module coupled to the probe, and a monitoring system.
Final Act. 3 (citing Dobsky Fig. 2, ii ii 7 - 9, 36, 37). The Examiner also
found that Dobsky does not describe or suggest a two-wire interface
comprising a pair of wires that provides power from the monitoring system
to the proximity electronics module and carries a non-processed electric
signal from the proximity electronics module to the monitoring system. Id.
at 3 - 4. The Examiner found that Blossfeld describes the claimed two-wire
interface. Id. at 4. In particular, the Examiner found that Blossfeld's Figure
2 depicts the two-wire interface:
Id.
Blossfeld teaches a two wire-sensor device comprising a pair of
wires providing power from one monitoring system to a sensor
module, the module being coupled to the monitoring system by
said two-wire current interface [Fig.2; two-wire interface Al,
A2 from sensor S to end stage W] for providing a non-
processed electrical signal to the monitoring system [Fig. 2;
Col. 2 lines 15-45; measured signal from sensor is sent to end
stage W].
Appellants argue that the rejections of claims 1 - 21 as obvious should
be reversed for any one of 3 reasons: (1) the Examiner erred by finding that
the combination of Dobsky and Blossfeld describe or suggest a two-wire
interface comprising a pair of wires that also provides power from the
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Appeal2014-002316
Application 12/836,965
monitoring system to the proximity electronics module, Br. 5 - 8; (2) the
Examiner erred by finding that the combination of Dobsky and Blossfeld
describes or suggests the provision of a non-processed electrical signal being
provided from the proximity electronics module to the monitoring system,
id. at 8 - 1 O; and (3) the Examiner has not provided an adequate reason to
combine Dobsky and Blossfeld in the manner required to render the claims
of the 965 obvious, id. at 10 - 11.
On the record before us, we are constrained to reverse the Examiner's
rejections under§ 103(a). Our reasoning for reversal of these rejections
follows.
In the Final Action, the Examiner found that the two-wire interface in
Blossfeld for providing a non-processed electrical signal to the monitoring
system comprised connections Al and A2 in FIG. 2. Final Act. 4. By so
finding, the Examiner necessarily finds that Blossfeld' s measuring sensor S
corresponds to the claimed proximity probe and that Blossfeld's current-to-
voltage converter W corresponds to the claimed proximity electronics
module.
To establish a prima facie case of obviousness, W's output must
comprise a "non-processed electrical signal" that is representative of the
instantaneous value of the length of the gap. The Final Action, however,
does not contain an express finding regarding this limitation. In the Answer,
the Examiner explains:
The examiner ... notes that the limitation "non-
processed signal" in claims 1 and 7 is given the broadest
reasonable interpretation. Dictionary.com defines "processed"
as a series of actions, functions bringing about a result. The
measured signals Ml and M2 of Blossfeld are current signals
indicative of a physical quantity sensed by the measurement
sensors S [claim 1] which may include a variety of sensors such
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Application 12/836,965
as a Hall sensor, pressure sensor or temperature sensor [Col.3
lines 30-35]. As seen in Fig.2 of Blossfeld, the output signal of
the measuring sensor S is not further processed before it is sent
to the input of the end stage W, i.e. the output current signal of
the measuring sensor S is not processed when it is sent to the
end stage W. Thus it meets the claim limitation of "providing
anon-processed electrical signal to the monitoring system".
The examiner interprets the output current signal of the
measuring sensor S as an electrical signal which does not go
through any stages/processes before it is applied to the end
stage W.
Answer4-5.
We cannot affirm obviousness rejections entered on the basis of the
reasoning set forth above. We begin by noting that, during prosecution, an
application's claims are given their broadest reasonable interpretation
consistent with the application's specification. In re Am. Acad. of Sci. Tech.
Ctr., 367 F.3d 1359, 1364 (Fed. Cir. 2004). The Examiner erred in
interpreting the claim term "non-processed electrical signal" by failing to
consider the '965 Application's Specification.
The term "non-processed electrical signal" does not appear in the '965
Application's Specification. Our review of the Specification reveals a single
passage that is relevant to the interpretation of the phrase "non-processed
electrical signal." This passage contrasts the use of current loops to
communicate parameters in the prior art. See Spec. 7. In particular, the
Specification states
Id.
As is well known, current loops operating in the range of 4 to
20 rnA have been used in the prior art for other applications to
communicate measured parameters. They have not been used
for transmitting a dynamic proximity transducer signal which is
proportional to the actual physical voltage, without any position
offset or peak detection to the signal prior to transmission.
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Application 12/836,965
Based upon this description in Appellants' own Specification, we
interpret the phrase "non-processed electrical signal" to mean a signal that
has not had position offset or peak detection processing applied to it prior to
transmission. 5
Furthermore, in response to Appellants' arguments, the Examiner
points to the transmission of measured signals Ml and M2 from Blossfeld's
sensor S to current-to-voltage converter Was corresponding to the claimed
transmission of non-processed electrical signals. Answer 4 - 5. The
Examiner's response is inconsistent with the Examiner's position regarding
Blossfeld's description of a two-wire interface. As discussed above, the
Examiner has implicitly found that Blossfeld' s converter W corresponds to
the claimed "proximity electronics module." Because the claims require that
the non-processed electrical signal be provided to the monitoring system
from the proximity electronics module, the connection between Blossfeld's
sensor S and converter W cannot constitute a description of the claimed 2
wire current interface.
Finally, we conclude that the Examiner has not provided an adequate
reason for a person of ordinary skill in the art at the time of the invention to
have combined the descriptions of Dobsky and Blossfeld to arrive at the
claimed invention. In particular, the Examiner has not explained why a
5 The Examiner has expressed concern regarding whether or not Appellants'
Specification describes any embodiments of the claimed invention that
transmit a non-processed electrical signal as we have construed that term.
See Answer 5. These concerns are best addressed by considering whether or
not Appellants' claims comply with§ 112 ,-i 1 after entry of the amendment
inserting the claim term "non-processed" in claims 1 and 7. We note that the
Examiner has not rejected the amended claims for failure to comply with
this statutory requirement.
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Application 12/836,965
person of ordinary skill in the art would seek to replace the interface
between Dobsky' s monitoring equipment and controller 42 with Blossfeld' s
powered two-wire interface. We note that Dobsky's proximity electronics
module includes its own power supply 44. See Dobsky Fig. 2. The
Examiner has not explained why a person of ordinary skill in the art would
remove power supply 44 from Dobsky' s proximity electronics module and
supply power from a remotely located power supply via the interface.
CONCLUSION
For the reasons set forth above, we summarily affirm the rejection of
claims 16 and 17 under§ 112, ,-i 2 as indefinite. On the record before us,
however, we are constrained to reverse the rejections of claims 1-21 of the
'965 Application under§ 103(a).
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § l.136(a).
AFFIR~v1ED-Il-~ -PART
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